Just over a year since the ground-breaking decision that a Court may grant website blocking orders to prevent access to websites selling counterfeit products (Cartier I), the High Court has granted an order to Cartier and Montblanc in respect of a further five websites. However, as his decision was based on the approach taken in Cartier I, the Judge has given the ISPs permission to appeal. The Court of Appeal will hear the appeal arguments in Cartier I in April 2016, which will focus on questions including the Court’s jurisdiction to make such orders, and considerations of proportionality.
The ISPs did not appear before the Court on this application and adopted a neutral stance, but did draw a number of factors to the Court’s attention. In particular, they argued that:
- There was no evidence that the ISPs’ services had been used to infringe the trade marks, as opposed to showing that it was possible to access the websites using their services.
- They did not have actual knowledge of such use, as opposed to the potential for their services to be used to access the websites.
- As the application for a website blocking order is analogous to a Norwich Pharmacal application, there should be 'full and frank disclosure' in the form of notice being given to the operators of the websites.
However, the Judge did not accept any of these arguments (in the light of the Cartier I decision, which he applied). The ISPs also gave a number of reasons why the grant of an order would not be proportionate. The question of proportionality will, of course, be considered by the Court of Appeal, but it must be assessed on the facts of each case and so the Court had to be satisfied that the orders sought were proportionate in this case. In particular the Court considered:
- Comparative importance of the rights engaged: the ISPs argued that only two of the websites were popular enough to warrant an Alexa rank. However, the Judge was happy to accept that a person searching for a fake Cartier watch or Montblanc pen would have a significant chance of finding even those of the websites that had less visibility.
- Availability of alternative mechanisms: the Court had considered, and rejected as not suitable alternatives, a number of mechanisms in Cartier I, including taking action against the website operators, seeking de-indexing by Google, seeking takedown by the relevant host, domain name seizure, and notifying providers of payment processing services.
- Efficacy and dissuasiveness: the Court said it was not necessary for the rights owners to show that blocking access to the target websites was likely to reduce the overall infringement of their marks.
- Impact on lawful users: the Court accepted that the targeted websites could share an IP address with other websites which lawfully market legitimate goods. Arnold J had resolved this concern in Cartier I by providing that an IP address should be blocked either where it was used solely by the target website or where the websites sharing that address were selling counterfeits. If the IP address for a target website was shared with a legitimate site, the order simply required Domain Name System blocking.
The Court of Appeal’s decision in Cartier I (and possibly in this latest case if it is dealt with at the same time) will be awaited with much interest given the significance of the extension of the website blocking regime to trade mark cases.